WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Mohammad Hussain, 5D Technology
Case No. D2017-1536
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mohammad Hussai, 5D Technology of Giza, Cairo, Egypt, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zanussi.tech> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2017. On August 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2017, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 19, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. Apart from the brief emails regarding a possible suspension, which was not finally agreed between the Complainant and the Respondent, no formal Response was filed with the Center.
The Center appointed Alejandro Touriño as the sole panelist in this matter on October 27, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and one of the world's leading producers of appliances and equipment for kitchen and cleaning products and floor care products. The Complainant acquired the Italian appliance manufacturer Zanussi in 1984. In 2015, the Complainant had sales of SEK 124 billion and about 58,000 employees.
The Complainant holds several ZANUSSI trademarks through its wholly owned subsidiary Electrolux Italia S.p.a. The Complainant holds several trademarks for ZANUSSI since 1973, long before the registration of the disputed domain name by the Respondent, including in Egypt based on International trademark registration No. 1201466, which was registered for ZANUSSI on March 6, 2014
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term "Zanussi", also long before the registration of the disputed domain name by the Respondent.
The disputed domain name was registered on March 12, 2015. The Disputed Domain Name resolves to a website in what appears to be Arabic that offers repair and maintenance services for ZANUSSI products.
5. Parties' Contentions
The Complainant states that it has registered a number of trademarks containing the term "zanussi" since 1973, enjoying a high degree of renown around the world. In addition, the Complainant contends that it has registered several domain names with generic Top-Level Domains gTLDs and country-code Top-Level DomainsccTLDs containing the trademark ZANUSSI. The Complainant further claims that the disputed domain name is identical or confusingly similar to its ZANUSSI trademark, which it directly incorporates, merely adding the gTLD ".tech". Indeed, such addition is not sufficient to distinguish the disputed domain name from the ZANUSSI well-known trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that its use is not bona fide. The Respondent does not own the trademark ZANUSSI and is not known by that name. Also, there is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. The registration by the Respondent of the disputed domain name takes advantage Internet traffic generated due to the incorporation of the wellknown ZANUSSI trademark.. the disputed domain name resolves to a website in Arabic offering repair and maintenance services for ZANUSSI products. The incorporation of the trademark ZANUSSI in the disputed domain name including the ZANUSSI logo appearing prominently at the website strongly suggests that there is a connection to the Complainant and that there is some official or authorized relationship with the Complainant for the purposes of repairs and services of the ZANUSSI products, creating an overall impression that they are, or are affiliated with, the Complainant. The Respondent has made no claims to having any relevant prior rights of its own, nor to having become commonly known by the disputed domain name. The Complainant further alleges that the Respondent's website does not meet all the Oki Data criteria as the Respondent did not publish a disclaimer on its website and is depriving the Complainant of reflecting the ZANUSSI trademark in the disputed domain name.
The Complainant further asserts that the Respondent registered and is using the disputed domain name in bad faith. In this respect, the Complainant points out that the ZANUSSI trademark is wellknown in the home appliance industry and, thus, it is therefore highly unlikely that the Respondent was not aware of the Complainant's rights in the referred trademark and its value at the time of registration. According to Complainant, the Respondent intentionally chose the disputed domain name based on a registered and wellknown trademark in order to generate more Internet traffic to its own business. The look and feel of the website is similar to the Complainant's official website by adopting the look & feel, colour scheme and logo of the Complainant. Further, the Respondent did not reply to the Complainant's cease and desist letter dated March 15, 2017. After the letter was sent out, the WhoIs details for the disputed domain name were changed, which strongly indicates that the Respondent has made an effort to conceal its identity in an attempt to delay and avoid consequences due to the bad faith registration and use of the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions. However, the Respondent submitted two emails to the Center both dated August 10, 2017, informing it on its decision to agree to any "right decision" from the Center. Additionally, owing to the possibility of a settlement the Proceedings were suspended. No agreement was reached; therefore, the Complainant requested the Proceedings be re-instituted.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has demonstrated that it holds trademark registrations in numerous jurisdictions for its ZANUSSI trademark, which has obtained the consideration of wellknown trademark.
The disputed domain name reproduces entirely the Complainant's ZANUSSI trademark with the addition of no other element apart from the gTLD suffix ".tech". The Panel does not consider that the use of the gTLD suffix ".tech" in this context in any way distinguishes the disputed domain name from the Complainant's ZANUSSI trademark (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the ZANUSSI trademark in which the Complainant has rights and therefore succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not own any registration concerning the trademark ZANUSSI and has not been licensed to use it by the Complainant. There is no evidence that the Respondent has been known by the disputed domain name or that the Respondent's website is in legitimate noncommercial or fair use. The Complainant further showed that the Respondent operates a website under the disputed domain name, which offers maintenance and repair services for the Complainant's household appliances and uses the "look and feel" of the Complainant's website for ZANUSSI products, thereby suggesting a link between the Respondent and his repair and maintenance services on the one hand and the Complainant and the ZANUSSI trademark on the other hand. As the maintenance services concerns the Complainant's genuine products, the Respondent could make a bona fide offering of maintenance services the disputed domain name if the criteria of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), which UDRP panels commonly apply in matters like the one at hand, were met. Considering that the Respondent, in absence of a formal service agreement with the Complainant's official service companies, is an unauthorized service provider of products under the ZANUSSI trademark, the Panel finds that the Respondent did not make bona fide offerings via the disputed domain name as the Complainant alleged that the Respondent did not accurately disclose his relationship with the Complainant, as would be required under the Oki Data precedent, which the Respondent did not dispute.
The Panel is satisfied by the evidence that any offering of services through the disputed domain name cannot be bona fide in the terms of paragraph 4(c)(i) of the Policy.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to evidence that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."
In the case at hand, there is evidence of registration and use of a domain name in bad faith since the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's ZANUSSI trademark. In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the ZANUSSI trademark in mind as the latest had already been registered for many years, it is not generic, and the Respondent uses the website under the disputed domain name to offer unauthorized maintenance services for the Complainant's products.
The fact that the Complainant sent a cease and desist letter to the Respondent requiring voluntary transfer of the disputed domain name, without the Respondent replying to it, and its failure to provide a formal response to the Complaint, further contributes to the Panel's finding of bad faith registration and use of the disputed domain name (e.g., Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598).
Based on the evidence that was presented to the Panel, including the Respondent's communication in which the Respondent agreed to any "right decision" from the Center, the Panel finds that the disputed domain name was registered and is being used in bad faith and therefore succeeds under the third element of the Policy. Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <zanussi.tech> be transferred to the Complainant.
Date: November 10, 2017